À contraster avec le test de Nike c. Bauer (voir par. 75 ci-dessous) : 1. The patent was not anticipated. Easton had argued that Nike/Bauer anticipated its own patent by having NHL hockey players try on prototype skates in a public arena before the filing date of the patent. The appeal court agreed that based on the available evidence, such casual observation of the prototypes without an opportunity for close scrutiny would not have revealed the invention to a skilled observer.

63] That being said, the real focus in this appeal was on whether an accurate and full description of the invention was available in this case, applying the undisputed principles set out in the reasons at paragraphs 80-90. As noted in the Appellants’ Outline of oral argument on Anticipation, did the judge misapply the law when one considers her findings of facts with respect to what actually occurred? For the Appellants , the Judge erred because “disclosure, not hypothetical disclosure of the invention is a necessary precursor to a determination of anticipation”

[64] In Lux, Aldous J. made it clear that he did not accept the argument before him that the task of the Court was to ascertain “what actually happened during the use of the prototype [the product embodying the claimed invention in his case] and from that conclude what a skilled man would assimilate” (Lux at page 134).

[65] In this case, I believe that the Appellants exhibit a similar misunderstanding.

[66] The test for anticipation by disclosure through a product (and for that matter, for anticipation by publication) is an objective one. Whether or not a real person fitting the description of the POSITA was actually present at the drilling site is irrelevant, as is what actually happened at the site during the rental period.

[67] What is relevant in the case of a product like the drilling tools at issue “is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination.[my emphasis]” (Lux at page 134 in the passage actually cited by the Judge in her reasons at paragraph 87).

[68] My understanding, based on the relevant jurisprudence, is that becoming available means that, the public, as defined earlier, had an opportunity to access the information that is the invention. As previously mentioned, it does not require that one actually took advantage of this opportunity. Once the opportunity is established as a fact (here, for example, that: (i) Dreco had unrestricted access to the drilling tools, and any information derived from such access was not protected by confidentiality; and (ii) a method to open such tools and examine their internal structures was known), the Court applies the legal test for anticipation developed in Sanofi (full disclosure of all the essential elements of the invention and enablement) to the information that the fictional POSITA would derive from the fictional examination.

[69] The Appellants disagree with the analogies used by the Judge, being: (i) a book in a public library (the reasons at paragraph 118); and (ii) the “lifting of the hood” (the reasons at paragraph 123). They say that the drilling tools in this case are not analogous to a book in a library, nor was the opening of the tools like the lifting of the hood of a car. Again, I cannot agree. Aldous J. in Lux, later quoted by Rothstein J.A. in Baker Petrolite, referred to the book in a public library even though he was looking at a case of prior use of a product, not anticipation by publication. The book in the public library could be in Japanese, even though the library is located in a remote village where no one speaks Japanese. This would still be a disclosure that would make whatever information it contained available, even though accessing the information that is available requires the use of a dictionary or even an interpreter that would not be available in that village. As for the lifting of the hood, it is true that opening the sealed joints to examine the internal structure may be a bit more tedious than lifting a hood but that does not detract from the validity of the analogy. As mentioned, this is not relevant; being available does not require that access to the information be easy, simply that it be possible using known methods and instruments.

[70] Again, I reiterate that it is my understanding of the law as it stands now that even if the library listed in a ledger all those who entered the library and recorded each book they reviewed, and a defendant would accordingly be able to prove that nobody had actually accessed the book in the library, my conclusion would be the same. The presence of the book in the library is sufficient to make the information available, and thus to meet the requirements for anticipation within the meaning of section 28.2.

[71] Although this may appear harsh, it is less so than the test that was applied in Canada prior to the adoption of paragraph 28.2(1)(a), and in England prior to the adoption of their Patents Act 1977 implementing the EPC. There is no evidence that, by adopting this new paragraph, the Canadian legislator meant to achieve any purpose other than harmonization with the test applied in Europe. I note that a similar amendment will come into force in the United States in 2013 (Leahy-Smith America Invents Act, 35 U.S.C. at §102 (coming into effect on March 16, 2013)).

[72] As mentioned in Baker Petrolite, paragraph 28.2(1)(a) now excludes from anticipatory uses products the examination of which would not give an accurate and complete description of the invention even if the most complex of the known analytical methods were used by the POSITA (see paragraph 42, particularly subparagraphs 1, 4, and 7, in Baker Petrolite). Typical examples would be where the composition or internal structure of a compound or product would not give any information as to the method used to make it (claimed invention) or as to the starting material used (essential element of a claimed invention). One can also think of the use of a known compound or product for a new technical effect that may not be discernable through examination of the product itself as it must be used in combination with another the product (where the claim is for a new use of the combination).

[73] It is also worth noting that, in its opinion dated December 18, 1992, the European Patent Office Enlarged Board of Appeal made it very clear that the composition or internal structure of a product (and the same principle applies to all products) is part of the state of the art “when the product can be analysed and reproduced by a skilled person irrespective of whether or not particular reasons can be identified for analysing the composition [my emphasis]” (G 1/92 Availability to the Public [1993] O.J. EPO 277, [1993] E.P.O.R. 241. Note that this opinion was referred to by the House of Lords in Synthon BV v. SmithKline Beechamplc, [2005] UKHL 59 at paragraph 29). In the Board’s view, there is simply no legislative requirement for a motive; it is not necessary that the POSITA have a reason for looking for the product composition. Like Rothstein J.A. in Baker Petrolite, I find this to also be true in Canada. This is perfectly in line with the fact that the court does not have consider whether the notional POSITA would be interested by a relevant prior art publication in respect of anticipation by publication. The hypothetical POSITA is presumed to have properly read the document.

[74] Applying the principles set out above to the present matter, the Judge had to determine whether, in this case, there was an opportunity to access the relevant information during the rental.

[75] It is on this question that the Judge distinguished the case before her from the situation in Bauer. In the latter case, the products were not rented or used by a third party, they were simply shown in an arena open to the public during a practice, but in a manner that prevented anybody not bound by confidentiality to do anything more than a visual inspection from afar. It was found as a fact in that case that such inspection would not have enabled the POSITA to write down a full description of the invention. However, on the facts before her, the Judge concluded that the rented drilling tools were available for more than visual inspection (the reasons at paragraph 119) and that these tools could be dismantled (the reasons at paragraph 121). She expressly held that the fact that the tools were rented rather than sold outright did not detract from the conclusion that there were opportunities for their examination (the reasons at paragraph 121).

[76] The Judge does not discuss in her reasons the evidence she considered to arrive at the conclusion that the 3103 assembly could be dismantled, and what this would involve. She had several drawings of the relevant drilling motors and their parts, as well as drawings of other similar motors. She had a picture and an actual sample of the Plaintiffs’ own drilling motor similar to the one in the 3103 assembly, except for the clear section of the outer casing over the bearing assembly (used for exhibition only). Ken Wenzel indicated that the drilling motors rented to Ensco, like the other drilling motors at issue in this case, were built to be serviced (or maintained) (Appeal Book Volume 10 at pages 3036, 3082, 3100). This implies that access to their inner structure was possible. Ken Wenzel also said during his cross-examination that to take the motor apart, one needed something to hold it while the joints were unsealed with the appropriate tool(s). Such tool(s) would have been available at the Rosenberg shop that Ensco shared with Griffith (Appeal Book Volume 10 at pages 3024, 3099-3100).

[77] The fact that such appropriate tool(s) may not have been usually available at the drilling site per se or that opening of the joints is not usually done at a drilling site is irrelevant. There is no evidence that Ensco was prohibited from bringing appropriate tool(s) to the drilling site or from bringing one of the drilling motors to the machine shop.

[78] In the absence of express contractual provisions to the contrary, at common law, a lessee would be entitled to use the rented equipment as he wishes so long as he returns it in good order and condition (H.G. Beale et al., eds., Chitty on Contracts, 30th ed. (London, England: Thomson Reuters, 2008) at page 238, section 33-077). There was no evidence that the opening of the drilling tools would in any way damage them. In fact, given that such tools are made to be serviced, one could assume that the opening and closing of the joints of the steel casing protecting the motor and bearing assembly in order to examine the inner workings was something that Ensco could do. As mentioned, whether they were actually interested in doing so is irrelevant.

[79] Ken Wenzel was clear that no information whatsoever about these rented tools was confidential. The Judge accepted this evidence. From that, it also becomes clear that the sealing of the joints on the drilling tools had nothing to do with confidentiality.

[80] When asked before us why the rental of the tools as opposed to their sale was significant, the Appellants replied that Ensco had possession of the equipment for only a short period of time. Still, I cannot see how it was not open to the Judge to hold as she did that a rental rather than a sale of the drilling equipment had no impact.

[81] Coming back to the analogies used by the Judge, the reference to the engine under the hood may not, as mentioned, be the most appropriate in terms of how one could get to the inner workings of the drilling tools at issue. Nevertheless, this statement indicates to me that the Judge was satisfied that it was rather simple for the POSITA to get to the inner structure to examine and describe the invention underlying the ‘630 Patent.

[82] As pointed out by the Appellants, it is true that the Judge does not expressly discuss whether the POSITA had the necessary skill to use the appropriate tool to open the steel casing in order to observe the 3103 assembly. It may simply be that she did not find the Appellants’ argument (if it was actually made before her, the transcript does not disclose anything in that respect) was worth discussing.

[83] In fact, it is difficult to imagine how the POSITA described in paragraph 46 of the reasons would not be able to open the drilling motor to get to the bearing assembly. There was no evidence that the use of the appropriate tool to do so required any special skills or any inventive step. Certainly, the means to open the drilling motor were available.

Patent Law Treaties Implementation Act S.3486, H.R. 6432, 9/25/2012

According to the Library of Congress, the bill has the following key features:

- Amends federal patent law to implement the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and the Patent Law Treaty. (Both treaties were ratified by the Senate on December 7, 2007.)

- Allows any person who is a U.S. national, or has a domicile, habitual residence, or real and effective industrial or commercial establishment in the United States, to file an international design application for international registration with the U.S. Patent and Trademark Office (USPTO) (thereby enabling U.S. applicants to file a single application with USPTO instead of separate applications in multiple countries).

- Sets forth the priorities of national and prior foreign and national applications.

- Standardizes application procedures to be consistent with other member countries.

- Extends the term for design patents from 14 to 15 years from the date of grant.

[22] For convenience, I set out again the one sentence in the 55-page patent on which Mylan relies in order to show that anastrozole not only inhibits aromatase, but also produces fewer side effects than AG.

It is a particular object of the present invention to provide aromatase inhibitory compounds with fewer undesirable side effects than [AG].

[23] It will be recalled that the question is whether the words “object of the present invention” mean that anastrozole produces fewer effects than AG, as Mylan argues, or whether, as AstraZeneca says, it means that this is what the invention aims to do, without promising that it has succeeded.

(i) undue reliance on dictionary definition

[24] The Judge stated (at para. 132) that the plain meaning of the word “object” suggests that it means an aim to be fulfilled, and referred to the following part of the definition of “object” given in the The Oxford English Dictionary. 3rd ed., on line version:

A goal, purpose, or aim; the end to which effort is directed; the thing sought, aimed at, or striven for.

[25] Mylan makes two points. First, the Judge put undue weight on the dictionary definition of “object”, rather than considering its meaning in the context of patent law. Counsel referred us to cases, including Amfac Foods Inc. v. Irving Pulp & Paper, Ltd. (1986), 12 C.P.R. (3d) 193 (F.C.A.) at 199, where the Court relied on an “object clause” to define the scope of the invention. On the basis of these authorities, he argued that the “object of an invention” was virtually a legal term of art and formed part of the definition of the invention.

[26] I do not agree. Patents are not required to contain a clause describing the object of the invention. When they do, the meaning of the object clause depends on the specific context, including the wording of the particular clause in question and its relationship to the rest of the patent. Indeed, in oral argument counsel conceded that object clauses should not necessarily always be construed as promises of the invention.

[27] Second, counsel for Mylan said that the Judge referred to only some of the dictionary synonyms for, or definitions of, “object”; in particular, he omitted “purpose”, a word that connotes what the invention does. In my view, however, this kind of close semantic parsing of the Judge’s reasons in this case is not productive. Reading them in their entirety, I am satisfied that the Judge placed relatively little weight on the dictionary definitions in reaching his conclusion that the patent does not promise that anastrozole has fewer side effects than AG. For example, he said (at para. 139):

In sum, the plain language of the patent, when read in the context of the patent as a

whole, does not support a promise of fewer undesirable side effects. I accept AstraZeneca’s argument that not all statements of advantage in a patent rise to the level of a promise. A goal is not necessarily a promise. The third paragraph of the 420 Patent refers to a forward looking goal, a hoped-for advantage of the invention.

[28] A better reading of the reasons, in my view, is that the Judge relied on the dictionary definitions and synonyms to confirm that, in its ordinary usage, the word “object” is capable of bearing the meaning that he had assigned to it on the basis of other considerations: the evidence of Dr Dowsett discussed at paragraphs 40-42 of these reasons, and his examination of the patent as a whole.

(ii) context of the patent

[29] In examining the patent in its entirety, the Judge noted that, apart from the “object of the invention” sentence in the specification, nowhere else in the patent is there any indication that anastrozole has fewer side effects than AG. In contrast to the statement of the invention’s object, the claims to the compound anastrozole and its inhibitory effects on aromatase are precise and specific. For example, Claim 13 covers “the compound [anastrozole]”, and Claim 15 relates to “The use of the compound [anastrozole] as an inhibitor of the enzyme aromatase.”

[30] Moreover, it is agreed that the 420 patent would be valid if it only claimed the compound anastrozole and its inhibitory effects on aromatase. It was thus unnecessary for the patent also to promise fewer side effects than AG. Even though tests, which AstraZeneca did not disclose, had been conducted showing that anastrozole was selective, a promise in the patent to this effect would be entirely gratuitous, and could only provide competitors with another basis for attacking its validity.

[31] Mylan counters these arguments by saying that the word “provide”, which appears in the object clause, is used elsewhere in the patent in connection with the claims of the patent. Thus,by stating that “it is a particular object of the invention to provide aromatase inhibitory compounds with fewer undesirable side effects than [AG]”, the object clause should, counsel argues, be interpreted as a promise.

[32] I do not agree. In my view, this microscopic approach to the construction of the provisions of a patent is misguided. The fact that such an ordinary word as “provide” is used in sentences containing the claims of the patent does not mean that when used in other sentences, it should be construed as connoting a promise of the patent.

[33] I agree with the Judge that an examination of the patent as a whole supports the conclusion that, unlike the express claims of the patent, the object clause contains no more than a forward-looking aim of the invention. In my view, the fact that side effects are not mentioned elsewhere in the patent is telling.

The following summarizes my understanding of the proper approach to determining the issues of utility and sufficiency in respect of selection patents generally, and the ‘113 patent in particular:

1. Review the patent to determine whether it sets out a specific promise of a substantial advantage over the genus compounds and, if it does, identify it.

2. In construing the patent, refer explicitly to the expert evidence to determine whether a skilled person would interpret the stated advantage(s) as being truly advantageous; only those advantages regarded as truly advantageous can form part of the patent’s promise.

4. The real issue in respect of sound prediction is whether there is an articulable line of reasoning from the factual basis set out in the ‘113 patent to the patent’s promise; that is, whether there exists a prima facie reasonable inference linking the factual basis to the promise.

5. To decide whether a selection patent discloses the invention sufficiently, one must determine whether it identifies the compound, its advantages and how it works; this is distinct from determining whether the patent meets the disclosure requirements for sound prediction (which is not in issue here).